AIPLA Thinks the Medinol Standard is Rough Medicine

When you file a trademark application, your final act is to sign the application. That signature, made under penalty of perjury, is that everything in the application is accurate to the best of your knowledge. Sometimes, we make mistakes. Those mistakes can equal “fraud,” in the eyes of the Trademark Trial and Appeal Board (TTAB). Under Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q. 2d 1205 (TTAB 2003) and a pile of subsequent cases it works like this:

If an applicant for a trademark says that he sells Widgets, Donkeys, and Thingamajigs under the trademark RANDUZZI, he had better actually sell Widgets, Donkey, and Thingamajigs under that mark. If the applicant only sells Widgets and Donkeys, he has committed “fraud” — therefore the application is void. To the best of my knowledge, nobody has been prosecuted for fraud, nor perjury under this standard — it has just cost them their trademark registration.

This is kind of harsh. Most of the cases that I have seen involved honest mistakes. Nevertheless, that is why you read the application carefully, and that is why you need a TRADEMARK LAWYER to help you with an application. Yes, a layperson can do it themselves, and Patent lawyers are licensed before the USPTO, therefore many of them are convinced that this makes them trademark lawyers too. I somewhat controversially discuss that issue here.

The AIPLA (American Intellectual Property Lawyers Association), (a group of primarily patent lawyers), thinks that this standard should be changed, and that there should be an “I made an innocent error” defense. Their proposal is blogged here, by Jon Welch. Welch’s commentary on the subject includes:

[T]here are “mistakes” and then there are MISTAKES. Every applicant and registrant will assert that its error was innocent, that it had no evil intent, and that the error resulted from misunderstanding of the law, oversight, or “carelessness.” Under the AIPLA’s proposal, why bother to have a verification at all? I’m in favor of erring on the side of truth and carefulness in filing documents with the PTO, not nonchalance and carelessness.

I agree with Jon, but I’m going to be a little more scathing. Perhaps there should be a standard that is a little more mellow. However, (take a deep breath) lawyers lie to save their own asses. I don’t. I never will. When I took my oath of attorney, I considered that to be indelibly burned upon my soul. A promise is a promise, and an oath is an oath. Most lawyers live by the same credo, and I have been honored to be co-counsel with them and opposing counsel against some of the most ethical and professional minds in the business.

Unfortunately, once in a great while, you bump into the kind of lawyer who gives us all a bad name. He will lie to save his own skin. He will lie to win his case. He will lie, lie, and lie again, and then when he gets caught, he will write up a phony affidavit to support his lie. I’ve seen it happen (recently), and I am sure that I will see it again.

The AIPLA’s proposal simply creates an avenue for this kind of behavior to be rewarded.

We all make mistakes — but the TTAB hasn’t exactly hidden the ball when it comes to what Medinol and its progeny require of us. What the USPTO needs is a clear process by which an application can be amended before it becomes an issue.